Domain Tools, LLC has filed suit (pdf) against a New Jersey man after he threatened to file a lawsuit against it and try to get its trademark for “Domain Tools” overturned.

The suit was filed against Russ Smith, owner of Consumer.net and Network-Tools.com, in U.S. District Court in Washington late last month.

According to the suit, Smith had sent a draft lawsuit to DomainTools that claimed copyright infringement for the historical thumbnails DomainTools captures of web sites. Smith also complained to Domain Tools about the company’s archival of whois database information. Additionally, he sent DomainTools a draft “Petition to Cancel” the DomainTools trademark that was recently granted.

3.3.5 In providing query-based public access to registration data as required by Subsections 3.3.1 and 3.3.4, Registrar shall not impose terms and conditions on use of the data provided, except as permitted by policy established by ICANN. Unless and until ICANN establishes a different policy according to Section 4, Registrar shall permit use of data it provides in response to queries for any lawful purposes except to: (a) allow, enable, or otherwise support the transmission by e-mail, telephone, or facsimile of mass, unsolicited, commercial advertising or solicitations to entities other than the data recipient’s own existing customers; or (b) enable high volume, automated, electronic processes that send queries or data to the systems of any Registry Operator or ICANN-Accredited registrar, except as reasonably necessary to register domain names or modify existing registrations.

I believe DT only queries whois upon registration and perhaps when someone looks it up. In which case this wouldn’t be unreasonable. I guess we’ll find out.

I am the Defendant. The whole thing started when I saw the posting about the Domain Tools TM. I own Domain-Tools.com since 2000 and I use it to point to network-tools.com which provides tools related to domain names. The issue is that the TM office denied their application of the principal registrar. DomainTools.com came back and claimed they had exclusive use of the term “Domain Tools.” They then provided a google search for “DomainTools” and my site came in second and even beat out the DomainTools.com twitter page. I have never accused DomainTools.com of violating the Anti-Cybersquatter law. I merely stated that I used Domain-Tools.com for its descriptive qualities and that DomainTools.com has not used the term exclusively over the past 5 years as they claimed to the TM office.

Then I saw they have taken full sized screen shots of all my web sites, put their logo on them, disabled my ads, and put their ads on them. On top of that they claimed “rights” to these images and warned visitors not to copy them. They also boast how they don’t honor robot.txt and they refused to take the images down.

As for the whois issue I am registered with Tucows. They have similar restrictions as above but there is also a Canadian law that says old account data must be anonymized or destroyed and that language is mirrored in the Tucows privacy policy. Additionally changes in European law have restricted the use of whois data for IP addresses (RIPE). Also, there is the issue of a $10,000 fee for the data. Tucows told me they have no agreement with DomainTools.com. I have complained that the UDRP providers, attorneys and escrow providers should not use the data because it is not authorized or verified.

I tried to resolve the issues with their attorneys (John Berryhill and Paul Keating)them but they filed a lawsuit across the country instead. DomainTools.com claimed that because I sent them and e-mail I formed a contract that includes an agreement to hear cases in Washington state. They also refuse to stop connecting to my network and Paul Keating says it is like driving on a public street with a sign saying “don’t take pictures” and nobody has to follow those instructions.

It is unclear how anyone can say something is “lawful” without identifying the actual law. Also I don’t see how a US court rules on Canadian and EU laws. Also courts don’t generally go around issuing declaratory relief for things that didn’t happen yet.